Vremya Novostey

Thursday, 31 May 2001
Page 5

Judge Not Lest Ye Be Judged
The owners of famous brands are expected in Rospatent

By Anastasia Naryshkina

The owners of well-known trademarks will no longer need to worry as this status will prevent anyone else from registering identical trademarks and, if they have already been registered, those registrations would be cancelled. Although exactly one year has passed since the date of adoption of the Rules for Recognition of Well-Known Trademarks in the Russian Federation, Rospatent has received only 34 applications (in general - about 40,000 applications for the registration of trademarks are filed every year in Russia - Editor). This was stated yesterday at a news conference held by the head of the Russian Patent and Trademark Agency (Rospatent) Alexander Korchagin. According to Korchagin, Rospatent expected that the number of those who wanted to register their trademark as well-known would be much larger - hundreds, because "the complaints were coming from all countries of the world." One of the reasons for this situation is probably the lack of awareness by the public about the broad possibilities of Russian trademark legislation.

Hence, this legislation has experienced some serious changes during recent years. "Not a single country of the world has rules of recognition of well-known trademarks in place," said Mr. Korchagin. "We became the first country to introduce them. In most countries, the issues concerning such trademarks are considered in the court, but not in the patent office." Thus, the issue of the recognition of trademarks as well-known arises only at a time when there is a conflict of interest between firms. In Russia, there is no need to take this conflict to the court - the trademark can be registered administratively at Rospatent. According to Mr. Korchagin, such a system is more convenient and less expensive. The lawsuits are very unpleasant and costly (as it appears to be with Smirnoff trademark).

Another new law will be introduced next year. On May 18, the Government approved and passed to the Duma a draft Law on the Introduction of Modifications and Amendments to the Law of the Russian Federation on Trademarks, Service Marks and Appellations of Origin of Goods. This draft amends every article of the existing law. In addition, it contains a new article on well-known trademarks. Mr. Korchagin believes that by the end of the year the law will be adopted and it will take effect in 2002. His confidence is explained by the fact that the introduction of the amendments was a requirement of the US delegation that will take part in the next round of negotiations in June regarding Russia's application to join WTO. The Americans said that if this draft were not submitted to the Duma in May, the negotiations would be cancelled.

Mr. Korchagin emphasized that all these legislative innovations were jointly developed during the last five years with the World Intellectual Property Organization (WIPO), that they passed a review by international experts, and that they completely correspond to international principles.

In practice it looks as follows. The owner claiming that his trademark is well-known, and in accordance with the rules, files an application with Rospatent's Supreme Patent Chamber. The application should include: where he sells the goods using this trademark; what is the sales volume; what is the average yearly number of consumers of the good; how much the trademark costs; etc. The Board of the Supreme Patent Chamber reviews the application and makes a decision, and Mr. Korchagin reviews the decision for approval. However, the rules do not mention what should be the production output that gives the right to call a trademark well-known. Also, it doesn't mention what should be the minimum number of consumers. As Mr. Korchagin explained, when we are speaking of, for example, Coca Cola or McDonald's, there is no need to prove anything. It is clear enough. But in the case of an applicant who cannot provide enough information, a public opinion poll is conducted to prove that everyone knows his trademark. The results of the poll are provided to the Chamber's board.

The head of Rospatent mentioned that to err is human, and even Rospatent's experts, not having enough information, sometimes make wrong decisions. But it is not dangerous. After obtaining more exact information, Rospatent can always revise its conclusions. If not, then it is possible to apply to the courts. The agency is always ready for this. "We must always make decisions that the courts would not be able to cancel," said Mr. Korchagin, and then added, that the court also sometimes makes mistakes - it's only God who doesn't.